Names are not always the best option for a trademark – it can be difficult to prove the name has acquired distinctiveness as a trademark. For example, some of L.L. Bean’s wordmarks were in use 35 and 57 years before they were registered. However, in Bruce Schlafly v. St. Louis Brewery the Federal Circuit did acknowledge that “[n]o law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use.” But it’s not easy – the St. Louis Brewery was able to register SCHLAFLY – with sales of 75 million beers, media coverage in the Washington Post and Wall Street Journal, and more than 25 years of continuous use.
Design Patents – One 2D drawing may support multiple 3D embodiments
The USPTO routinely rejected design applications having two-dimensional views that could be interpreted by examiners as covering different three-dimensional embodiments. This likely changes with In re Maatita. The Federal Circuit recently held “… the fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional … perspective.”
Willful infringement does not guarantee enhanced damages
In Polara Engineering Inc. v. Campbell Company, the Federal Circuit reversed an enhanced damages award despite affirming a jury finding of willfulness. Although the Federal Circuit found substantial evidence supported the jury’s finding of willfulness, it found the district court’s basis for awarding nearly the maximum amount of enhanced damages was not adequately explained, noting that the district court failed to even mention a public use defense. The takeaway – district courts must fully explain their decision to enhance damages.
Court rules that “lost foreign profits” may be available
The U.S. Supreme Court rules in WesternGeco LLC v. ION GeoPhysical Corp. that 35 U.S.C. § 284 allows patent owners to damages that “can include lost foreign profits when the patent owner proves infringement under §271(f)(2).” Justice Thomas clearly answers the question whether these statues allow a patent owner to recover for lost foreign profits – “We hold that they do.”
Court Upholds Constitutionality of IPR
Today, the U.S. Supreme Court issued it’s opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et. al. The U.S. Patent and Trademark Office has reviewed patent validity with various proceedings for decades, with ex parte reexamination since 1980 and inter parties reexaminations since 1999. More recently, various parties had questioned the constitutionally of the new inter parties review (IPR) authorized by Congress with the America Invents Act (AIA) of 2011. In today’s 7-2 decision, the Court upheld the constitutionality of the IPR.
No Monkey Business
The U.S. Circuit Court of Appeals for the Ninth Circuit has affirmed dismissal of the of the “monkey selfie” case. In their opinion, the panel concluded that “this monkey-and all animals, since they are not human-lacks statutory standing under the Copyright Act.” In other words, animals can’t sue for copyright infringement.
Celebrate World IP Day – April 26th
World IP Day was established by WIPO to celebrate the value of patents, trademarks, industrial designs and copyrights in innovation and creativity. See the AIPLA’s website for an event near you!
Congratulations to the Santa Fe Business Incubator on their 20th anniversary!
Is Apple headed toward an iCar?
Last week, Apple had one patent application publish describing augmented reality displays, and another publish describing autonomous vehicle control. Looking forward to seeing where Apple goes!
Auto IP USA returns May 8th
IAM is hosting the third Auto IP USA on May 8th at The Henry Ford. Details may be found on IAM’s site.